ABBASOV, Lenar Download PDFPatent Trials and Appeals BoardOct 29, 20202019005574 (P.T.A.B. Oct. 29, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/441,207 05/07/2015 Lenar Abbasov 12PLAS0370-US-PCT 6868 95329 7590 10/29/2020 CANTOR COLBURN LLP - SABIC EXATEC 20 Church Street 22nd Floor Hartford, CT 06103 EXAMINER SANDERSON, LEE E ART UNIT PAPER NUMBER 1782 NOTIFICATION DATE DELIVERY MODE 10/29/2020 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): usptopatentmail@cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LENAR ABBASOV, ANDREW SICS, SARAH ELIZABETH GRIESHABER, SCOTT MICHAEL DAVIS, and TIANHUA DING Appeal 2019-005574 Application 14/441,207 Technology Center 1700 Before LINDA M. GAUDETTE, BRIAN D. RANGE, and DEBRA L. DENNETT, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL1 The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1, 2, 4–15, 17–20, and 22.3 We AFFIRM IN PART. 1 This Decision includes citations to the following documents: Specification filed May 7, 2015 (“Spec.”); Final Office Action dated Nov. 15, 2018 (“Final Act.”); Appeal Brief filed March 11, 2019 (“Appeal Br.”); Examiner’s Answer dated May 16, 2019 (“Ans.”); and Reply Brief filed July 16, 2019 (“Reply Br.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as SABIC GLOBAL TECHNOLOGIES B.V. Appeal Br. 2. 3 We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2019-005574 Application 14/441,207 2 CLAIMED SUBJECT MATTER The invention relates to a coating system for coated metal or polymeric tubes. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A coated tube comprising: a metal tube; and a coating composition on the metal tube, wherein the coating composition comprises a polyester and an impact modifier, and wherein the impact modifier comprises at least one pendent group selected from epoxy groups and maleic anhydride groups; wherein the coating composition is in direct physical contact with the metal tube or is in direct physical contact with a metal coating layer located on the metal tube; wherein one or both of a 0.254 mm nominal gauge film of the coating composition or a 0.508 mm nominal gauge film of the coating composition has an average peel strength from a 1 inch wide metal strip of greater than or equal to 0.5 N/mm when peeled at a 90° angle, wherein the 1 inch wide metal strip comprises steel and the metal coating, wherein the metal coating comprises 95 wt% zinc and 5 wt% aluminum based upon a total weight of the metal coating. Appeal Br. 21 (Claims App.). REJECTIONS 1. Claims 1, 2, 4, 5, 7–9, 12–15, 17, 19, 20, and 22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hibino ’568 (US Appeal 2019-005574 Application 14/441,207 3 2003/0066568 A1, pub. Apr. 10, 2003) in view of Schueler (US 2002/0115771 A1, pub. Aug. 22, 2002). Final Act. 3.4 2. Claims 1, 2, 4, 5, 7–12, 15, 17, 19, 20, and 22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hibino ’568 in view of Lacroix (US 7,119,152 B1, iss. Oct. 10, 2006). Final Act. 7. 3. Claims 1, 2, 4, 5, 7–9, 12, 14, 15, 19, 20, and 22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hibino ’568 in view of Zerafati (US 7,015,261 B1, iss. Mar. 21, 2006). Final Act. 11. 4. Claims 1, 2, 5–7, 11–15, 19, 20, and 22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hibino ’411 (US 2003/0077411 A1, pub. Apr. 24, 2003) in view of Agarwal (US 2009/0181199 A1, pub. July 16, 2009). Final Act. 16.5 5. Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Hibino ’568 in view of Schueler and Campagna (US 2002/0005223 A1, pub. Jan. 17, 2002). Final Act. 20. OPINION The Examiner found that Hibino ’568 and Hibino ’411 disclose hoses for transporting liquid fuels. Final Act. 3, 16; see Hibino ’568 ¶ 46; Hibino ’411 ¶ 5. The hoses comprise a metal film layer covered with a resin layer, 4 The Examiner relies on Rogunova (US 2008/0214720 A1, pub. Sept. 4, 2008) as an evidentiary reference for claim 14 in this rejection as well as the rejection of Hibino ’568 in view of Zerafati (see supra Ground 3). 5 The Examiner relies on the product data sheet for Joncryl ADR-4368 from BASF dated 25 January 2008 and available at http://www2.basf.us/additives/pdfs/4368_ TDS.pdf as an evidentiary reference for claim 14. Appeal 2019-005574 Application 14/441,207 4 such as polybutylene terephthalate (PBT). Final Act. 3, 16; Hibino ’568 ¶¶ 37, 55; Hibino ’411 ¶¶ 24, 37–38. The Examiner found that neither Hibino ’568 nor Hibino ’411 discloses or suggests including an impact modifier in the resin layer. Final Act. 3, 16. The Examiner found, however, that each of Schueler, Lacroix, Zerafati, and Agarwal discloses a composition that improves the impact properties of polyester resins such as PBT. Final Act 3, 8, 12, 16. The Examiner determined that the ordinary artisan would have modified Hibino ’568’s resin layer to improve its impact properties as follows: (1) by forming the resin layer from Schueler’s polyester resin composition comprising PBT and from 0.4 to 20 pbw of an olefinic copolymer comprising glycidyl (meth)acrylate as a comonomer (Final Act. 3–4); (2) by incorporating from 2 to 40 wt% of Lacroix’s impact modifier comprising a core shell polymer and an ethylene copolymer comprising unsaturated epoxide monomers (id. at 8); or (3) by incorporating 1 to 50 pbw of Zerafati’s impact modifier comprising 20–80 wt% of a core/shell additive and 20–80 wt% of an ethylene/methacrylic acid copolymer comprising a comonomer having an epoxy group (id. at 12). The Examiner determined that the ordinary artisan would have modified Hibino ’411’s resin layer to improve its low temperature ductility, low permeability, and resistance to gasoline and short chain alcohols by forming the resin layer from Agarwal’s polyester resin composition comprising 51 to 90 wt% PBT and up to 20 wt% styrene-acrylic copolymer comprising pendant glycidyl groups (i.e., epoxy groups). Id. at 16–17. “An obviousness determination requires finding both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art . . . and that the skilled artisan would have had a reasonable expectation of Appeal 2019-005574 Application 14/441,207 5 success in doing so.’” In re Stepan Co., 868 F.3d 1342, 1345–46 (Fed. Cir. 2017) (quoting Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016)). The Appellant argues that “there is no motivation for one of skill in the art considering Hibino [’568] in view of Schueler[, Lacroix, or Zerafati]” or “Hibino [’411] in view of Agarwal” “to arrive at the coated tube of Claim 1.” Appeal Br. 8, 12, 15, 19. The Appellant’s arguments are not persuasive because the Appellant has not explained sufficiently why it was erroneous or unreasonable for the Examiner to have found that the ordinary artisan would have modified Hibino ’568’s and Hibino ’411’s resin layers to include an impact modifier comprising at least one pendent group selected from epoxy groups and maleic anhydride groups based on the secondary references’ teachings that such compounds improve the impact properties of PBT. See Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012) (“[M]otivation to modify a prior art reference to arrive at the claimed invention need not be the same motivation that the patentee had.”). As to the rejection of claim 1 based on the combination of Hibino ’411 and Agarwal, the Appellant additionally argues that the ordinary artisan would not have been motivated to substitute Agarwal’s composition for the resin layer of Hibino ’411’s hose. See Appeal Br. 17–18. The Appellant contends that Hibino is concerned with forming a metal layer on the resin layer without creating pinholes, and “fails to disclose that [its] metal layer can be successfully wet plated on a resin substrate comprising the presently claimed impact filler without forming a pinhole,” or “that the[] substrate in general can include filler compositions.” Id. We agree with the Examiner that this argument is not persuasive because the “Appellant has not provided Appeal 2019-005574 Application 14/441,207 6 any objective evidence that one of ordinary skill in the art would have had a reason to expect that the composition of Agarwal would lead to pinhole formation.” Ans. 26; see Appeal Br. 18 and Reply Br. 8 (arguing, without citation to supporting evidence, that “one of even ordinary skill in the art understands that the formation of the pinholes will be at least partially dependent upon the chemical composition of the substrate and the wettability of the metal on the respective components in the substrate”). The Appellant also argues that the ordinary artisan would not have had a reasonable expectation “of achieving the presently claimed adhesion to a metal” by modifying Hibino ’568’s resin layer based on the teachings of Schueler, Lacroix, or Zerafati, or Hibino ’411’s resin layer based on the teachings of Agarwal. Appeal Br. 6, 11, 14, 18. The Appellant asserts that Hibino ’568 “fails to consider the adhesion between the[] fluid-impermeable layer and the[] rubber or resin layer” and Schueler, Lacroix, and Zerafati “fail[] to consider the adhesion between their molding composition[s] and a metal layer.” Id. at 6, 10–11, 14. The Appellant similarly argues that “Hibino [’411] fails to disclose or suggest that good adhesion can be formed between the[] metal plating layer and the[] underlying layer” and “Agarwal fails to even consider the adhesion between [its] moldable polyester composition and a metal layer.” Id. at 18. The Examiner found that Hibino ’568’s coating composition, as modified by Schueler, Lacroix, or Zerafati, and Hibino ’411’s coating composition, as modified by Agarwal, would have been identical or substantially identical to the claimed coating composition, and, therefore, the prior art compositions necessarily would have exhibited the adhesion properties recited in claim 1’s last paragraph. See Final Act. 4–5, 9, 13, 17– Appeal 2019-005574 Application 14/441,207 7 18. The Examiner’s finding is supported by the Specification as well as the Appellant’s own admission that “the presence of the pendent groups are directly responsible for [the improved adhesion].” Appeal Br. 7, 11, 14–15 (“[T]he presence of the impact modifier having the pendent group selected from at least one of epoxy groups or maleic anhydride groups resulted in an increased adhesion to the metal tube.” (citing Spec. ¶¶ 17, 60)); see also Spec. ¶¶ 17, 21, 23, 41, 60. The Appellant has not refuted the Examiner’s findings that the secondary references disclose impact modifiers comprising a pendent group as claimed. “Where . . . the claimed and prior art products are identical or substantially identical, . . . the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations omitted). The Appellant has not provided persuasive argument or evidence to meet his burden. Therefore, we are not persuaded of reversible error in the Examiner’s finding that the ordinary artisan would have had a reasonable expectation of success in achieving the claimed adhesion properties. See Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d 1322, 1332 (Fed. Cir. 2020) (“If a property of a composition is in fact inherent, there is no question of a reasonable expectation of success in achieving it.”). The Appellant relies on Specification Example 3 as evidence of unexpected results. Appeal Br. 7, 11, 15. As explained by the Examiner, this evidence is not persuasive of unexpected results because [t]he data . . . are generated from a single working example and single comparative example wherein the adhesion properties of the coating composition were tested on GALFAN treated steel sheets. . . . Appellant’s claims encompass a range of adhesion Appeal 2019-005574 Application 14/441,207 8 values which extends from 0.5 N/mm to an infinite degree [of] adhesion. The data on the other hand do not indicate that such a range of adhesion can be achieved with [a] composition encompassed by the scope of the claims. Ans. 22. The Appellant has not provided an adequate basis to support a conclusion that other embodiments falling within the scope of claim 1 (or claims 2, 4, 5, or 22 (see Appeal Br. 7, 11, 15)) would behave in the same manner. Compare Appeal Br. 7, 11–12, 15 (“[O]ne of skill in the art would readily understand that the presence of the claimed coating composition will result in the improved adhesion and the testing of this narrower range illustrates that the presence of the pendent groups are directly responsible for said improvement. . . . One of skill in the art would readily understand that the exemplified data would extend to the[] claim[] [22] ranges.”), with In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“If an applicant demonstrates that an embodiment has an unexpected result and provides an adequate basis to support the conclusion that other embodiments falling within the claim will behave in the same manner, this will generally establish that the evidence is commensurate with scope of the claims.”) and In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (mere conclusory statements of superiority in the Specification and/or the Brief, unsupported by factual evidence, are of little probative value). Further, the Appellant’s contention that Specification paragraphs 17 and 60 provide support for unexpected results (see Reply Br. 5) is not persuasive because these paragraphs do not provide comparisons to the closest prior art. In sum, we are not convinced of reversible error in the Examiner’s rejections of independent claim 1. Appeal 2019-005574 Application 14/441,207 9 The Appellant argues that the Examiner reversibly erred in finding that Hibino ’568 discloses the claim 4 “coating composition ha[ving] a thickness of 0.05 to 2 mm” (Appeal Br. 21 (Claims App.)). Id. at 9. The Appellant contends that “Hibino [’568] fails to disclose a thickness range for their rubber or resin layer and merely discloses an example where their metal film was extrusion-coated with a 2.5 mm thick EPDM unvulcanized rubber.” Id. at 9. The Appellant’s argument is not persuasive because it fails to show error in the Examiner’s findings that adjusting the Hibino ’568’s resin layer thickness would have been a matter of routine optimization given Hibino ’568’s disclosures that the “resin layer . . . in the impermeable hose permits the impermeable metal film to be protected from physical injury due to external force and from liquid corrosion” (Hibino ’568 ¶ 27) and “[t]he thickness of the resin layer can be determined suitably in accordance with the portion in use and the purpose of use without any limitation” (id. ¶ 55). Final Act. 5–6; see In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”). Specifically, the Appellant has not met its burden to show criticality in the claimed range. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). To the contrary, the Specification disclosure relied on by the Appellant (Appeal Br. 9, 12, 16) indicates a lack of criticality in the claimed range of 0.05 to 2 mm. See Spec. ¶ 64 (“The protective coating can have a coating thickness of up to several millimeters (e.g., up to or exceeding 10 millimeters (mm)), specifically, 0.01 to 5 mm, more specifically, 0.05 to 2 mm, and more specifically, 0.1 to 0.5 mm.”). The Appellant also references the Specification Examples as evidencing Appeal 2019-005574 Application 14/441,207 10 criticality (Appeal Br. 9, 12, 16), but has not explained, nor is it apparent to us, how these Examples show criticality for the claim 4 coating thickness range. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (explaining that the burden of analyzing and explaining data to support nonobviousness rests with the Appellant). In sum, we are not convinced of reversible error in the Examiner’s rejections of claim 4. Claim 17 depends from claim 1 and requires that “the metal tube is . . . rigid or semi-rigid.” Appeal Br. 23 (Claims App.). The Appellant argues that Hibino ’568 “teaches away from such a technical feature and clearly desires a thin, flexible metal film.” Appeal Br. 9, 12. The Appellant contends that Hibino ’568 “clearly and consistently discloses that [its] impermeable metal film has a bellows shape” and discloses examples where the bellows tube is bent. Id. at 9, 13. The Appellant argues that “one of even ordinary skill in the art having a working knowledge of English would not consider the bellows tube of Hibino [’568] to be rigid or semi-rigid.” Id. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Having reviewed Hibino ’568, we are not convinced that the reference teaches away from a rigid or semi-rigid tube as claimed. First, as argued by the Examiner, the Specification does not define “rigid or semi-rigid.” See Ans. 25. The American Heritage dictionary defines “rigid” as “[n]ot flexible or pliant; stiff” and defines “semi-” as “[p]artial; Appeal 2019-005574 Application 14/441,207 11 partially.”6 Applying, these definitions, the Examiner had a reasonable basis for interpreting the claim term “semi-rigid” as encompassing a structure having some flexibility, such as Hibino ’568’s metal bellows. Second, even assuming that the Appellant is correct in stating that the ordinary artisan would not have understood the terms “rigid or semi-rigid” as encompassing a bellows shape, Hibino ’568 explicitly defines “impermeable metal film” as “having a bellows shape in a part or a large part in the axial direction but having a straight or bent tube shape in the other part.” Hibino ’568 ¶ 13; see also id. ¶ 48. Because claim 17 does not require that the tube is rigid or semi-rigid along its entire length, the broadest reasonable interpretation of claim 17 encompasses a tube in which only a portion thereof is rigid or semi-rigid (e.g., the straight portion of Hibino ’568’s tube). Finally, the Appellant has not identified evidence to support its assertion that because Hibino ’568’s metal tube has a thickness of only 50 to 500 micrometers, it could not be rigid or semi-rigid. See Appeal Br. 9. Moreover, Hibino ’568 explicitly states that “[t]he thickness of the impermeable metal film is not limited” (Hibino ’568 ¶ 50). See In re Morris, 127 F.3d 1048, 1057 (Fed. Cir. 1997) (“The PTO was not only permitted but obligated to reject claim 1 when appellants failed precisely to define in the written description the disputed language, and there was a reasonable alternative definition.”). 6 Ahdictionary.com (accessed Oct. 21, 2020), https://www.ahdictionary.com /word/search.html?q=rigid, https://www.ahdictionary.com/word/ search.html?q=semi. Appeal 2019-005574 Application 14/441,207 12 Accordingly, we are not convinced of reversible error in the Examiner’s rejections of claim 17. Claim 18 depends from claim 1 and requires that “the metal coating [is] between the coating composition and the tube.” Appeal Br. 23 (Claims App.). The Examiner determined that the ordinary artisan would have coated the outer surface of the metal layer of modified Hibino ’568’s tube with a zinc layer based on Campagna’s teaching that coating the outer surface of inner metal tubes of multilayer fuel tubes with a zinc layer provides corrosion resistance. Final Act. 20. The Appellant argues that Campagna discloses that a primer layer must be positioned between the zinc layer and the first polymer layer to achieve good adhesion. Appeal Br. 20. The Appellant thus contends that the ordinary artisan, when adding a zinc layer to modified Hibino ’568’s metal tube, would have included a primer layer between the zinc layer and the coating composition. Id. The Appellant argues that in the resultant coated tube, the coating composition would not be in direct physical contact with the metal coating layer as required by claim 18. Id.; see claim 1 (“wherein the coating composition is in direct physical contact with the metal tube or is in direct physical contact with a metal coating layer located on the metal tube”). The Examiner failed to address this argument in the Answer (see Ans. 27–28). See MPEP § 1207.02(A)(2) (9th ed. rev. 08.2017 Jan. 2018) (“The examiner’s answer should include . . . [a] statement of whether the examiner disagrees with each of the arguments of appellant in the brief with respect to the issues presented and an explanation of the reasons for disagreement with any such argument.”). In responding to a similar argument in the Final Appeal 2019-005574 Application 14/441,207 13 Office Action, the Examiner explained that the rejection is based on Campagna’s teaching of the utility of a zinc layer, and “noted that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” Final Act. 29; see Appeal Br. 19. This response does not adequately address the Appellant’s argument. Specifically, the Examiner has not explained why the ordinary artisan would have included only Campagna’s zinc layer in modified Hibino ’568’s coated tube given Campagna’s teaching that a primer is necessary to promote adhesion of a polymeric layer to a metal tube. In this regard, we note that while Campagna explicitly states that various polymeric compositions may be applied directly to the bare metal tube surface (see Campagna ¶ 38), we find no indication that a primer may be omitted when the metal tube surface is coated with a zinc layer (see, e.g., id. ¶ 39, claims 1–20). Because the Appellant has argued persuasively that a preponderance of the evidence fails to support the Examiner’s determination that claim 18 would have been obvious over the combination of Hibino ’568, Schueler, and Campagna, we do not sustain above-listed ground of rejection 5. Any additional arguments made by the Appellant in the Appeal and Reply Briefs, but not discussed in this Decision, have either been fully addressed by the Examiner and are unpersuasive for the reasons stated in the Answer, or raise new arguments that should have been made in the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) (“Properly interpreted, the Rules do not require the Board to take up a belated argument that has not been addressed by the Examiner, absent a showing of good cause.”). Appeal 2019-005574 Application 14/441,207 14 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 5, 7–9, 12– 15, 17, 19, 20, 22 103(a) Hibino ’568, Schueler 1, 2, 4, 5, 7–9, 12– 15, 17, 19, 20, 22 1, 2, 4, 5, 7–12, 15, 17, 19, 20, 22 103(a) Hibino ’568, Lacroix 1, 2, 4, 5, 7–12, 15, 17, 19, 20, 22 1, 2, 4, 5, 7–9, 12, 14, 15, 19, 20, 22 103(a) Hibino ’568, Zerafati 1, 2, 4, 5, 7–9, 12, 14, 15, 19, 20, 22 1, 2, 5–7, 11–15, 19, 20, 22 103(a) Hibino ’411, Agarwal 1, 2, 5–7, 11–15, 19, 20, 22 18 103(a) Hibino ’568, Schueler, Campagna 18 Overall Outcome: 1, 2, 4–15, 17, 19, 20, 22 18 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED IN PART Copy with citationCopy as parenthetical citation